Yale Bulletin and Calendar

March 19, 2004|Volume 32, Number 22

Hollis D. Kleinert is president and CEO of Protometrix, a New Haven-based biotech start-up spun out of Professor Michael Snyder;s development of a microchip that can analyze virtually all yeast proteins.

FAQs about OCR: How Yale investigators
can tap office's resources

The following are some frequently asked questions about the Office of Cooperative Research (OCR).

When should I call OCR?

OCR encourages investigators, particularly those who have not yet interacted with the office, to be in contact early in the process of discovery. If you think you have an invention, disclose it to OCR before you submit a manuscript for publication, an abstract for a conference, or before you address a seminar or symposium. The timing of any public disclosure of an invention, either a publication or presentation, is crucial for filing a patent application. Patent rights can be lost if a public presentation is made prior to the filing of a patent application.

How do I disclose an invention to OCR?

To make the process for disclosing an invention to OCR as easy as possible, an invention disclosure form can be completed and submitted online (www.yale.edu/ocr/invent_disclose.html). The entire OCR staff is notified of your disclosure by e-mail the moment you submit it. The office will assign the appropriate licensing professional to your case.

What happens after I disclose an invention?

OCR works with the investigator to assess the patentability and potential economic and social impact of each discovery. The office then designs a strategy to realize this potential. OCR may retain the services of a patent attorney to draft the application and prosecute it with your assistance. Not every invention requires patent protection for commercialization. A typical outcome may be to file a provisional patent application.

Will I be a part of the patent filing process?

Ongoing input from the investigator is essential to the patent filing process. The investigator will be asked to provide material describing the invention to facilitate preparation of a patent application. This may include a manuscript or a copy of a presentation. The investigator may also be needed at later stages of the patent prosecution process to ensure that the invention is properly described and protected.

How does OCR commercialize an invention?

OCR, with input from the inventor, identifies and contacts companies or organizations that may be interested in commercializing the technology. A non-exclusive or exclusive license agreement may then be negotiated with one or more companies to specify the terms of product development, including a development timeline, payment terms and other obligations. OCR may also negotiate option agreements (that allow a company to evaluate a particular technology for a specified period of time), material transfer agreements, sponsored research agreements and collaborative research agreements.

Do these agreements have an impact on my ability to continue my own research?

No. Yale reserves the right of its investigators to continue research on technologies that are licensed.

Will I receive a portion of the income?

Inventors receive a portion of the income that results from the license. The distribution between Yale and the inventor varies according to the size of the royalty payment. For more information, visit www.yale.edu/ocr/invent_policies/patents.html.

Who are the licensing professionals at OCR?

OCR licensing professionals have decades of collective experience in the life and physical sciences and in corporate, government and academic sectors. They are:

John Demlein Jr., associate director, who has degrees in engineering and is a former partner at DatAssist Database Development. He was also the commanding officer aboard the U.S.S. West Virginia and the U.S.S. Sculpin.

Henry Lowendorf, associate director, who has nearly 20 years of technology transfer experience at Yale. Prior to joining OCR, he conducted research at Cornell in agronomy and at Yale in physiology and forestry.

John Puziss, associate director, who was formerly a senior research investigator at Bristol Myers Squibb Company, where he led research in drug discovery. He was also in business management at Proteome Inc., a genomics and proteomics start-up company. Puziss has conducted research in the areas of molecular biology, genetics and microbiology.

Bill Wiesler, associate director, who is a former senior associate with McKinsey & Company's pharmaceutical and medical products practice. He also was an associate in healthcare venture capital at Radius Ventures and a group leader for screening and automation at Cadus Pharmaceutical Corp. Wiesler has research experience in chemistry and molecular biology.

Alan Carr, licensing associate, who earned a Ph.D. in Yale's Department of Molecular Biophysics and Biochemistry. Prior to joining OCR, he was a research associate for J. Bush & Co., a New Haven investment firm.

Catherine Shih Koh, licensing associate, who has several years of technology transfer experience at Yale, Massachusetts General Hospital and Children's Hospital in Boston. She has degrees in the biological sciences and healthcare management.

Loraine Trusch, licensing associate, who has managed marketing and operations in a start-up company focused on software training and consulting. She has degrees in molecular and cell biology and business administration.

T H I SW E E K ' SS T O R I E S

Yale scientist on team that discovered new planetoid

Robert Blocker has been reappointed to third term . . .

Center to foster research on cerebral cortex

Bulldogs' Nate Lawrie busy preparing himself for NFL Draft

Political scientist Ian Shapiro named YCIAS director

Zbigniew Brzezinski . . . to present talk on campus

Magic, comic mayhem prevail in re-telling of old tale

'Digital Cops in a Virtual Environment' will explore . . .

Conference to consider 'The Future of Secularism'

Exhibit features works by artist who combined fact and fantasy . . .

NIDA director discusses complicated causes . . . of drug addiction

Castle Lectures to explore materialism in today's culture

English faculty to present staged reading of 'Pentecost'

'Enclave' to explore architectural aspects of ports of commerce

In Focus: Office of Cooperative Research